Tag Archives: Brand Management and Branding

Best of 2006: Trademark City

Originally posted 2015-01-19 19:30:38. Republished by Blog Post Promoter

Trademark City

The Strategic Name Development blog reports that the naming rights to the New York Mets’ new baseball stadium have been sold to Citigroup. The stadium will be called “CitiField” and the privilege of that garish plug will cost Citigroup $20 million a year, or the cost of a grade-A free agent. The blog post has a great rundown on alternative “Citi” names that were considered, as well as a roundup of back-page and other learned reactions.

10 Years of LIKELIHOOD OF CONFUSION®

10 Years of LIKELIHOOD OF CONFUSION®

CitiGroup is itself a metropolis of trademark issues. The CitiGroup Center, which is right out the window of my office (over my shoulder in the picture above left), is a landmark building, i.e., a de facto trademark for the company on the New York skyline, of which it is one of the leading and tallest lights. In the picture below, taken from the east, you can see how its distinctive angles tower jauntily over the lovable rust-colored “lipstick”-shaped [former] LIKELIHOOD OF CONFUSION Building at 885 Third Avenue (below). But of course, buildings can’t really be trademarks, can they? If they can be, the CitiGroup Center is. Read More…

Best of 2010: If you see something… it’s probably “trademarked”

Originally posted 2010-12-24 08:00:42. Republished by Blog Post Promoter

First published on May 12, 2010.

If You See Something, Say Something

See me, squeal me

A while ago, while obsessing about New York’s Metropolitan Transportation Authority and its obsession with turning what might have once merely been viewed as functional municipal signage or insignia into “IP ,” I made fun of the MTA’s trademark application (since approved) for IF YOU SEE SOMETHING, SAY SOMETHING.

So in light of last week’s Times Square bomb-thingy, who’s laughing now?  Not the New York Times, in an article about the phrase’s elevation to “iconic,” including an interview with sloganeer extraordinaire Allen Kay:

“The model that I had in my head was ‘Loose Lips Sink Ships,’ ” Mr. Kay said. “I wasn’t born [yet] during World War II, but I sure knew the phrase and so did everybody else.”

“In this case,” he added, “I thought it was ironic because we want just the opposite. We want people to talk. I wanted to come up with something that would carry like that. That would be infectious.”

In 2002, the transportation agency saw a need for a security-awareness campaign to encourage customers to report suspicious activity or unattended packages, and they turned to Mr. Kay, who still had the phrase on his index card. By January 2003, the slogan was on posters and placards in subway cars, buses and trains.

It has since become a global phenomenon — the homeland security equivalent of the “Just Do It” Nike advertisement — and has appeared in public transportation systems in Oregon, Texas, Florida, Australia and Canada, among others. Locally, the phrase captured, with six simple words and one comma, the security consciousness and dread of the times, the “I ♥ NY” of post-9/11 New York City.

The transportation authority received a trademark on the slogan from the United States Patent and Trademark Office, though unauthorized uses appear to outnumber authorized ones.

That’ll happen with plain old ways to say things in English–once called “phrases” or “sentences,” not “trademarks.”

Did you know, by the way, that you can “receive a trademark” from the PTO?  I didn’t.  I thought they only registered trademarks, which are otherwise earned by use that rises to the level of establishing a secondary meaning!  Silly me.

So the end of that distinction, manifested of course by the common use of “trademark” as a verb, is now official, for it is no longer recognized among reporters or their diligent, triple-checking editorial phalanxes at the Newspaper of Record.  This says it all about what “trademarking” has become, unfortunately; as to “journalism,” well, what do I know?

There’s more: Read More…

Oscarwatch.com a trademark infringement?

Originally posted 2010-03-23 15:38:08. Republished by Blog Post Promoter

The Academy of Motion Pictures is suing a website called Oscarwatch.com. Fair use anybody? The site’s owner, Sasha Stone, has been doing his homework:

I used to watch Oscar all the time

“I am not trying to exploit the Academy’s trademark to offer competing goods and services,” Oscarwatch.com’s Stone told [The Hollywood Reporter].
“Rather, I am offering commentary that directly addresses the Oscars awards, a topic of great interest to the general public, thanks largely to the efforts of the Academy itself. I believe that the use of (Oscarwatch) to describe commentary about the Oscars is that of fair use.”

I believe he’s right. But this may be one of those close cases in which the mark holder still has to act. And in California, the Academy’s chances aren’t terrible, because many of their judges are.

UPDATE:  More of the same, and a case that Oscar Madison would certainly appreciate!

UPDATE: From the Citizen Media Law Project:

The parties settled soon after the lawsuit was filed, and Stone changed the name of his site to “Awards Daily” and his domain name to “http://www.awardsdaily.com.”

Putt this in your pipe and smoke it

Originally posted 2013-04-24 14:31:12. Republished by Blog Post Promoter

Putt Putt Fun CentersPutt-putt — miniature golf, right?

Yes, but, PUTT-PUTT® — registered trademark for miniature golf services!  Steve Baird explains:

So, I learned two things this weekend, Adam Scott is the first Australian to win the Masters, and “putt-putt” golf is a brand of miniature golf, not a generic designation for a type or category of golf game. In fact, I was surprised to learn that the brand is subject to federally-registered trademark rights, and for much more than mini-golf services, see herehereherehere, and here.

In the Putt-Putt v. 416 Constant Friendship decision, the court granted summary judgement in favor of Putt-Putt’s federal and Maryland State trademark infringement and unfair competition claims. The court basically found it unnecessary to hold a trial in order for Putt-Putt to win. Not only did the court find there to be infringement as a matter of law, it also found Putt-Putt to be a “strong” trademark.

Why the surprise? I grew up using and hearing the term as a generic reference, not a brand. Apparently 416 Constant Friendship couldn’t muster up enough evidence to even create a genuine issue of material fact on the question of validity. Survey evidence would have been interesting, but there was no mention of this type of evidence, the registrations appeared to carry the day on validity.

I’m surprised too.  And it’s a little troubling, as Steve seems to be saying, that the issue was decided on summary judgment.  Just as I said about the purported trademark for “ping pong” years ago, yes, you can have a trademark registration, so technically speaking you have a trademark unless and until someone pushes back in front of a judge or a jury, or both.  In the case of ping pong, which  is what everyone calls table tennis, I am certain that if that happened, that registration would be history.

So as I say, like Steve, I would have thought the same thing regarding PUTT-PUTT.  So what exactly did happen in that case?  It’s worth looking a closely at the opinion.

For one thing, it doesn’t appear that Putt-Putt, LLC was looking for trouble here.  This lawsuit was evidently not born of a cease and desist letter or some sort of enforcement campaign, but rather a trademark registration application by the defendant, 416 Constant Friendship LLC, for the mark “PUTT-PUTT FUN CENTER” for, well, miniature golf type stuff.  This terms is, as you can see on the screen shot above, how Putt-Putt brands its fun centers.  This brilliant move was made on March 5, 2012.

Dude.  Putt-Putt didn’t only already have half a dozen PUTT-PUTT trademarks, i.e., the ones Steve links to.  Putt-Putt had itself filed trademark application a month earlier for the mark … yes — PUTT-PUTT FUN CENTER — which was published for opposition the next July and added to the Register on October 9, 2012.

What were the Constant Friends thinking?  (Not even going to talk about the lawyer who filed that application — not today.)

Well, let’s take a step back. Read More…

Dear Linus: Trademarks are not Security Blankets (UPDATED!)

Originally posted 2011-08-16 12:34:57. Republished by Blog Post Promoter

Dana Blankenhorn understands how trademark law works. Evidently, Linus Torvald’s lawyers don’t. And if Dana’s wrong and Linus is right, why, that will be an interesting new chapter in the IP rent-grab-a-thon: Open source trademarks, where quality control (the sine qua non of trademark licensing) is, to say the least, besides the point.

UPDATED:  Luis Villa writes, in the comments, regarding this post, originally posted August 24, 2005:

Those articles are more than four years old now, Ron, and the policy has proven fairly robust- as far as I know there have been no Linux(tm)-related trademark lawsuits since the policy was put in place, and all major Linux vendors support the policy. (That said, licensing is now free, rather than having a nearly de minimis cost, as it has been folded into the work of the Linux Foundation.)  (Read the rest..)

Emerson InSinkErator trash compactors will mangle your hand if you stick it in one of them.

Originally posted 2006-10-19 13:44:39. Republished by Blog Post Promoter

Sounds like a reasonable assertion, right? The same thing will happen if you stick your hand into an Acme trash compactor. It’s just bad practice. Who could be offended by that?

Insinkerator

Emerson Electric could (links added):

COMPANY SUES NBC FOR DEFAMATION
Emerson Electric is suing NBC over a scene in their new series “Heroes” that featured the company’s garbage disposal, according to an CNN Money article. The first episode showed one of the characters (whose superpowers include indestructibility) stuffing her hand down the disposal and getting it mangled, although within a few seconds her hand was fully healed.

However, Emerson, makers of the “InSinkErator,” believes the scene gratuitously showed their product as being dangerous. Their suit alleges that the program “implies an incorrect and dangerous design for a food waste disposer,” and “casts the disposer in an unsavory light, irreparably tarnishing the product.” They are reportedly asking the court to order NBC to “remove Emerson trademarks from future broadcasts of the show and also seek damages suffered from NBC’s acts of “unfair competition, trademark infringement, and trademark dilution.”

A spokesman for Emerson pointed out data showing that not only are you 10 times more likely to suffer harm from your dishwasher, but any injuries suffered in the event of a disposal accident would not be nearly as severe as those shown in the TV episode.

You can’t say “unbelievable” any more, because nothing is. But on the face of it, this sounds mighty flimsy — “trademark use,” anyone? — and an abuse of the Lanham Act that may be sanctionable. Decide for yourself and let me know what you think: Here’s the amended complaint.

The suit was filed in St. Louis, where Emerson is based.

UPDATE:  Stupid claim settled.  Of course.

The color purple

Cadbury-PurpleCadbury is purple in the face over not being able to secure the wordlwide exclusive rights to the use of the color purple in association with the sale of chocolate — even as against an Australian company that’s been using the two together for almost a century:

Cadbury tells me it is “vigorously appealing” against a judgment over the use of purple. In a case that it has pursued for five years, Cadbury has tried and failed to stop Darrell Lea, an Australian chocolate manufacturer, from using the colour.

Despite the fact that Darrell Lea was established in 1927 and has been using purple for most of its existence, Cadbury insists that it has no right to the colour. Cadbury has registered one shade of purple in relation to block chocolate in tablet form in Britain but it has not been as successful elsewhere.

Purple, actually, may be the oldest legally-protected “trademark” color, of sorts. The color was, at certain times during ancient times and antiquity, permitted to be worn only by the nobility. To which, in the chocolate sense, Cadbury may or may not have a claim. I do like the stuff, and perhaps it is among the elite in the chocolate hierarchy. Certainly compared to virtually anything else the English make it is uniquely edible — but regal?

UPDATE:  Cadbury’s claim melts in its hands, not just in our mouths.

UPDATE II:  Settled, dismissed, whatever. It’s all over but the calories!  Via @IPThinkTank.

UPDATE III: Yes.  But no.  I mean yes.

Trademark McCrisis? (Or, McArabia)

Angry at McDonaldsIs this good for McDonalds’ branding (click here for my personal favorite URL)?

I’m not so sure it’s that bad. Having your trademark publicly desecrated by the perpetually unhappy — the people, as Jonathan Rosenblum puts it, “for whom life itself is an insult” — because your mark is the happy symbol of American convenience, hospitality, tasty enjoyment and, well, let’s say free enterprise — isn’t the worst thing that can happen. (Via Instapundit.)

McDonald's AbroadBy the way, notice how the “angry” guy’s friends are cracking up as he does his performance for the cameras. Five will get you ten that he’s doing this to impress a girl.

Chicks love this stuff.

Yes, this cross-cultural business is confusing, isn’t it?

Dimming star?

Ann Althouse:

Starbucks used to seem like a luxury brand, and now it feels like a fallback when you can’t get to the real thing.

Ouch. (Via Instapundit.) Ann sees it happening in the automated coffee machines in the shops. But could it have to do with branding incoherence typified by this?
Cobranding hell

Lug me tender

Doctors (J.D.) Detroit?

Should a law school be tendering seven figures of money to a minor league baseball team for stadium naming rights?  That is certainly a novel question.

I tackled the whole concept of branding, memory and stadium names in the context of the Mets’ Citi Field deal a few years ago–but a bank is one thing.  Heck, these guys know how to make record profits just by threatening to go out of business!  So who am I to say?

But a law school?  That’s something I know a little about!

And… with all due respect… should the law school that does that be Thomas M. Cooley Law School in Michigan?  Well, perhaps if it would be any school it would be Cooley, which has always marched to the sound of a different drummer.

A very, very different drummer.  I once wrote an article, or perhaps just a short roundup-type item, about Cooley when I was contributing editor for Student Lawyer magazine, but I can’t get my hands on the cuneiform tablets just now.  I do remember that it was the school that actually did things “the old fashioned way”–they actually admitted two or three times the number of students who were really going to make it through law school, and they actually kicked out people who couldn’t cut it.  So, yes, they have always been very funky, original and daring over there.

And in that context, now let’s see the Wall Street Journal Law Blog and the stadium story: Read More…